“But I thought we never used 101…”

Today was 101 day.

I’m not kidding.

We had two lectures as well as exercises and legal readings on what kinds of claims do and do not appear to be statutory. We had good clarification of what kinds of claims are judicial exceptions, what kinds are not, and what preempting a judicial exception is. Somehow, throughout the entire lecture, I could actually hear attorneys howling with pain.

We had some interesting examples for the “concrete” criterion, but I won’t use them. As my own example, without reference to potential patentability, choosing beauty contest winners by choosing the most beautiful girl isn’t very concrete. That is, the result isn’t repeatable. Photographing faces of contestants, projecting their faces onto a grid, measuring the symmetry of their faces, and choosing as the winner the contestant with highest measured symmetry, is a repeatable process. Again, these examples are mine, warts and all.

Our lecturer pointed out in the morning that the example answers for signals might have to be revised by the afternoon, since a verdict on that issue is pending.

We discussed transformation of matter, and that printing on a page without modifying the substrate is not considered a transformation that matter. Note: that doesn’t mean that it isn’t statutory. It just means that it doesn’t fall into the category of “transformation of matter.” Storing things in computer memory is also not a transformation of the matter of the computer memory.

We also talked about real-world results, and a bunch of other things I’m sure I’m omitting. I’ll have to go back through my notes to see what else was covered.

Also – I noticed Kim Examiner pointed out that the current group of cadets is going at a “glacial pace” in a comment on the Patently-O blog. Yes, Ms. Examiner, some days go pretty slow. There’s definitely a middle ground somewhere between two weeks of training and eight months. But I did want to set the record straight for anyone who thinks that we’re just doing lectures for eight months – we start doing actual examining at around two months in. After that, our lectures are all MPEP related, and take up much less of our time.

Oh, and Kim? May I call you Kim? Thanks for calling me cute.

(“Bismark, you won’t believe what happened to me on the PatentlyAcademic blog today…”)

8 thoughts on ““But I thought we never used 101…””

Well now you’re getting into some of the contentious stuff & this is where I’d be really curious as to what the Academy tells you to read. Were you encouraged to read Chakarbarty (the US Supreme Court decision)? How about State Street? How about Lundgren?

IMHO the MPEP does a particularly bad job of explaining 101 even to seasoned examiners. Some think they have to find cement inside the claim language. Sheesh. Unless you have read the whole litany of 101 cases by the CAFC, this “concrete, useful result” language can really throw you off track. BTW, 101 does not say what is not patentable. It identifies who (what people) may apply for a patent. Whoever invents any …

The defintion of “concrete” they’re teaching you (repeatable) has nothing to do with any law. Linda Therkorn (or whoever authored this part of the Guidelines) made it up out of thin air. It’s fiction.

Since when is ink-on-paper printing not statutory? Eibel process, a 1923 Supreme Court decision, found that the invention was patentable, and still is often cited on “subject matter.” Many of the 1980’s and early 1990’s important cases were about printing – Beloit, Valmet, and other printing companies sued each other repeatedly, with no queston that printing is not a statutory process. A memory with data stored thereon is statutory – what’s the basis for saying that the act of storing is not statutory? (There are Board decisions exactly on point to the contrary – your lecturers can’t just ignore these decisions without explanation.) If the general rule they’re teaching you doesn’t fit the specific facts and outcomes of the cases, then their general rule ain’t worth much, is it.

But we’re going to be seeing this baloney in Office Actions, aren’t we. Geeze louise. No wonder the system is breaking down.

Points to Ponder: Note that I didn’t say that ink-on-paper printing wasn’t statutory – I said that it wasn’t a transformation of matter, if the matter is the paper and the ink. If you change the ink, that’s transformation of matter. If your ink changes the physical properties of the paper, that would be transformation. Earlier on in the Academy, we were given the example of a printed bar code as an article of manufacture.

I can’t speak to the “concrete” issue, except to note that they never said that “repeatable” was the definition of concrete; that was my simplification. They *did*, say, however, that the “concrete” criterion was a difficult concept that even experienced examiners still had trouble with.

some examiner: While I appreciate your criticism, please note two things about my earlier response:
1) I said that “Repeatable” was not given as the definition of “concrete.” This is accurate.
2) “Substantially repeatable” cannot be the definition of concrete because the term “concrete” was not defined in State Street, as far as I can see. “Substantially repeatable” is the metric that the PTO uses to determine concreteness, as given in the Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility.

Suggestion with regard to 101 rejections (which you will probably only see if you go into the 2100 or 3600 groups) … look at claim 1 of U.S. Patent No. 5,333,184, and ask yourself, “if I applied my reasoning for rejecting the claim in the application I am examining to claim 1 of U.S. Patent No. 5,333,184, would I also reject claim 1 of that application?”

If the answer is “yes,” then you need to rethink your analysis. The patent I referred to was the subject of the decision by the Federal Circuit in AT&T Corp. v. Excel Communication, which is the companion case to State Street (they came out of the Federal Circuit at the same time). The Federal Circuit determined that the claims are directed to statutory subject matter.

One of the significant aspects of claim 1 of the ‘184 patent is that it is a method claim (that would almost necessarily have to performed on a computer), but the computer isn’t recited as part of the claims.